Office of Petitions

The Office of Petitions, under the authority of the Associate Commissioner of Patent Examination Policy (ACPEP), reviews and decides petitions, requests, and related inquiries, regarding the filing of patent applications, revival of abandoned applications, reinstatement of expired patents, withdrawal of patent applications from issue, small entity entitlement, review of previous decisions of the Technology Centers, suspension of regulations, and questions not specifically provided for by regulations.

01 - Requirements of a Petition

All business with the USPTO is transacted in writing. The petition should be directed to the USPTO official delegated the authority to decide that petition. See MPEP Chapter 1000. Since different matters may be considered by different branches or sections of the USPTO, each distinct subject, inquiry or request should be contained in a separate paper to avoid confusion and delay in answering papers dealing with different subjects. 37 CFR 1.4(c).

MUST contain a statement of facts involved, the point(s) to be reviewed and the action requested, 37 CFR 1.181(b):

The care and completeness with which petitions are drafted can clearly influence the decision rendered. 37 CFR 1.181(b) sets forth the general requirements for the content of a petition. The petition must contain a statement of the facts involved, the point(s) to be reviewed and the action or relief requested. The petition submitted should be as complete as possible and any evidence necessary should be submitted. Any error(s) in a requirement or action on the part of the USPTO should be clearly set forth with the reasons why such requirement or action is considered improper.

MUST be accompanied by a fee, if required, in order to avoid the petition being summarily dismissed, 37 CFR 1.181(d):

To avoid a petition being summarily dismissed for lack or insufficient fee, petitioner should make certain that the correct petition fee is submitted along with the petition. See the current fee sheet for guidance.

MUST be timely filed, as required in 37 CFR 1.181(f), or as required in a specific statute or regulation:

Generally a petition not filed within two (2) months from the action complained of may be dismissed as untimely. Further, the mere filing of a petition will not stay the period for replying to an examiner's action that may be running against an application or act as a stay of other proceedings. 37 CFR 1.181(f).

MUST comply with any specific requirements as provided by statute, regulation, or USPTO policy:

Care should be taken to review the applicable statute, regulation or USPTO policy to determine if there are other requirements that need to be met in submitting the petition.

Facsimile transmission for all petitions, requests, and related inquiries must be directed to the USPTO Central FAX Number of 571-273-8300 unless otherwise indicated below;

Petitions to Withdraw from Issue sent to the Central FAX Number should be marked "Special Processing Submission;"

ONLY Petitions to Withdraw from Issue, in particular, URGENT Petitions to Withdraw from Issue where patent issuance is imminent, may be facsimile transmitted directly to the Office of Petitions at 571-273-0025; or

Hand Carry: United States Patent and Trademark Office Customer Service Window, located on the Ballenger Avenue side of the Randolph Building, 401 Dulany Street, Alexandria, VA 22314 (Hours of operation are 8:30 a.m. to midnight, Eastern Standard Time, Monday through Friday).

Further information regarding mailing and hand carry procedures and addresses for the USPTO may be obtained from:

Any petition filed under 37 CFR 1.313(c) to withdraw an application from issue after payment of the issue fee should be clearly marked "Petition under 37 CFR 1.313(c)."

The USPTO CANNOT ensure that any Petition for Withdrawal from Issue under 37 CFR 1.313(c) will be acted upon prior to the date of patent grant; therefore it is highly recommended that any URGENT(i.e., where the issue date is imminent) Petition for Withdrawal from Issue under 37 CFR 1.313(c), AFTER PAYMENT OF THE ISSUE FEE, should be filed via:

EFS;

Directly facsimile transmitted to the OFFICE OF PETITIONS via 571-273-0025; or

Directly hand carried to the OFFICE OF PETITIONS (Bring petition to the Guards desk located on the west side of the Madison Building lobby (600 Dulany Street, Alexandria, VA); and

IMMEDIATELY AFTERan URGENT Petition for Withdrawal from Issue has been filed, the OFFICE OF PETITIONS should be alerted with a follow-up telephone call via 571-272-3282.

The USPTO CANNOT ensure that any Petition/Letter of Express Abandonment under 37 CFR 1.138(c) and accompanied Petition for Withdrawal from Issue under 37 CFR 1.313(c) will be acted upon prior to the date of patent grant; therefore it is highly recommended that any URGENT(i.e., where the issue date is imminent) Petition/Letter for Express Abandonment and Petition for Withdrawal from Issue under 37 CFR 1.313(c), AFTER PAYMENT OF THE ISSUE FEE, should be filed via:

EFS;

Directly facsimile transmitted to the OFFICE OF PETITIONS via 571-273-0025; or

Directly hand carried to the OFFICE OF PETITIONS (Bring petition to the Guard's desk located on the West side of the Madison Building lobby (600 Dulany Street, Alexandria, VA); and

IMMEDIATELY AFTERany URGENT Petition/Letter for Express Abandonment and Petition for Withdrawal from Issue has been filed, the OFFICE OF PETITIONS should be alerted with a follow-up telephone call to 571-272-3282.

If, however, it is believed that the necessity to file a petition resulted from error on the part of the Office, then such petition should be filed under 37 CFR 1.181, for which no petition fee is required.

If, however, it is believed that the necessity to file a petition resulted from error on the part of the Office, then such petition should be filed under 37 CFR 1.181, for which no petition fee is required.

21 - Petition for Retroactive Foreign Filing License

Aretroactive license may be sought if an unlicensed foreign filing has occurred through error and without deceptive intent. However, the requirements of 37 CFR 5.25 must be fulfilled in order for such a petition to be granted. Note that licenses under 37 CFR 5.25 are only made retroactive with respect to specific acts of foreign filing, and therefore the countries, the actual dates of filing and the establishing of the nature of the error must be provided for each act of proscribed foreign filing for which a retroactive license is sought. Also, the required verified statement must be in oath or declaration form.

A petition for a Retroactive foreign filing license based on a pending patent application (37 CFR 5.14) or for material not related to any pending application (37 CFR 5.13), may be mailed, faxed, hand-delivered or filed thru EFS-Web (provided an application is on file).
Facsimiles must be sent to: 571 273-0185

No form available. Submit a signed request that includes information listed in Requirements of a Petition within two (2) months of the date of the patent application publication that identifies the Office’s material mistake. The two month period is not extendable.

A material mistake is an error that affects the public’s ability to appreciate the technical disclosure of the patent application publication, to determine the scope of the patent application publication, or to determine the scope of the provisional rights that an applicant may seek to enforce upon issuance of a patent. Examples of a material mistake usually include:

an error in the published claims,

an omission in the published specification or drawings, and

an omission in the benefit claim.

Examples of a non-material mistake, for which the request will not be granted, include:

an error in the assignment information, the inventor information, or the title and

typographical errors in the publication that do not affect the interpretation of the published claims

If the two month period has expired or the mistake is caused by the applicants, applicants may correct the mistakes by filing a request for republication under 37 CFR 1.221 (a), and should not file a request for corrected publication under 37 CFR 1.221 (b). Requests for republication under 37 CFR 1.221 (a) are filed entirely online without review by a human and must be submitted via the EFS System as a “Pre-Grant Publication”. Guidance for filing a request under 37 CFR 1.221(a) can be found here.